Unless you have been using the trade mark for a long time, we strongly recommend first submitting a Headstart application.

Under the standard trade mark application process, it can take anywhere between 3 – 6 months before an examiner even looks at your proposed trade mark. For most businesses, that’s way too long of a wait to know if you will likely succeed in registering the mark, or if you will possibly have to do a rebrand.

Meanwhile, if you opt for the Headstart service provided by IP Australia, a trade mark examiner will usually get back to you within 5 working days with a report outlining whether your trade mark will be successful or not.

If there are any issues raised in the report, you then have the opportunity to amend your trade mark. This could mean amending the trade mark itself (e.g. changing the words, or uploading a logo instead) or deleting one of your classes so it doesn’t conflict with an existing mark. Amending your application, if required, is an additional fee, however, it is well worth it to increase the success of your trade mark application.

After you have received the report and made any amendments (if necessary), you will then have five working days to pay a Part 2 fee.

This converts your Headstart application into an official trade mark application. 

Essentially, a trade mark is a way of identifying your unique goods/products or services from others. It’s how customers recognise you in the marketplace and distinguish you from your competitors.

Trade marks can be many things, including:

1. Business/brand name – like Coca-Cola;
2. Logo – like Nike Swoosh device;
3. Combination of name and logo;
4. Slogan or tagline – like “Just Do It”;
5. Names of the products or services you provide; and
6. Even a colour or scent – like Cadbury’s distinctive purple as a colour trade mark for chocolate.

It’s important to understand that each thing you’re trying to trade mark is its own piece of intellectual property. Therefore, if you were to trade mark your business name and logo, these would be two standalone applications. It is not uncommon for applicants to apply for their name, and then apply for the logo separately only to have one application accepted but the other knocked back.

To protect your brand to the absolute max, it’s best to trademark everything you can. However, if you’re strapped for cash, typically your brand name i.e. the particular words themselves, would provide the greatest scope of protection.

Ultimately, whatever you apply for really depends on your particular circumstance. If your brand name is too descriptive, or similar to that of other registered trade marks, you may have greater success if you apply to register your logo mark instead. Alternatively, your logo might be more important to your brand than the name, in which case, you might want to register it only. 

When you apply to register a trade mark, you must choose one or more “classes”.

Choosing what “class” or “classes” are right for you can be the most difficult part. There are 45 different classes you can choose from. Of these 45 classes, the classes fall into one of two categories:

(1) “goods” or
(2) “services”.

The first 1 – 34 classes are for goods (i.e. physical products), and the other 35 – 45 classes are for services you may provide (e.g., cake decorating). You can use the Trade Mark Classification Search to assist with selecting your classes of goods or services.

What classes you choose are important because once you have secured your trade mark, you only have the exclusive right to use your trade mark in connection with the goods or services you have registered in.

For example, if you were in the business of producing luxury suitcases, the most obvious class to register in would be Class 18 which is for ‘items used for the transport of personal goods, such as suitcases and other travelling bags’. Once your trade mark is registered, you will have the exclusive right to use your trade mark in connection to this class. However, if your brand expands and you decide to start selling clothing, you are not protected as your trade mark is registered in Class 18, rather than Class 25 which is for ‘clothing, footwear and headwear’.

Once you have chosen a class, you will also need to choose a description within that class. Back to our luxury suitcase example, the most relevant class is Class 18, however the description within that class would most likely be Suitcases, Suitcase handles, Luggage, Luggage bags, Luggage straps, Overnight cases etc. 

The way you can stop other others from copying your brand identity is twofold – your trade mark can be wielded as both a sword and a shield.

Sword: Competitors may try to take advantage of your trade mark, or elements of your logo, business name, or design for their own products or services thereby driving traffic away from your business and confusing prospective customers. After you lock in your trade marks, you have the right to stop others from infringing on your intellectual property, such as sending a cease-and-desist letter or initiating proceedings.

Shield: Once you have registered your trade mark, you have the exclusive right to use, licence and even sell the mark. Another benefit after registration is that your trade mark can carry the ® symbol. This symbol puts others on notice to respect your mark and can ward off potential competitors when they are conducting searches to decide on their brand name. Registration also prevents another party from adopting a near identical name to yours, meaning similar names to yours in the same class of goods or services can’t be registered.

A common misconception is that a business name is enough to protect your brand. In reality, it’s not. Even though you have registered your business name on ASIC’s business name register, this does not give you the exclusive right to use the name. No one can register a business name that is identical to yours, however, this doesn’t prevent another party from registering your name (or one similar to yours) as a trademark before you.

Registration of a trademark is on a first to file basis. If another party beats you to trade mark registration, the trade mark owner may take legal action against you for infringing on their mark and you may need to stop trading under that name. As you can imagine, rebranding is a costly exercise that could prove to be detrimental to your brand. Of course, you have some options to stake your claim to the unregistered mark if you have built up a significant reputation over a sufficient period of time – such as applying to the court to have their trade mark removed from the register. However, it is easier to avoid this expensive headache altogether by securing your trade marks before anyone else does! 

Believe it or not, the brand that your users and customers associate with your service or product could be your most valuable asset as your brand grows. Aside from preventing others from registering the same or similar mark, your trade mark is a valuable piece of intellectual property that can be both sold and licensed.

Gaining trade mark protection is also another way to encourage investment in your brand. It shows that your brand is legit and plans to grow. If you don’t have these in place, investors and potential purchasers of your business will be wary as to why not. This is because the value of your trade mark also represents your business’s goodwill. Goodwill is the intangible value of a business, such as its overall reputation, customer loyalty and branding. Essentially, your business will be valued higher than the sum of its actual assets the greater it’s goodwill. It’s best to get your ducks in a row early and get trade mark protection as soon as possible before sh*t gets real!

1. Searches/ Advice: One of our Immerse advisors will conduct preliminary searches and prepare email advice on the process and recommended classes for your goods and/or services.
2. Filing: Once you are confident with the type of trade mark you are applying for (e.g., name, logo, or slogan etc.) and have chosen the classes of goods and/or services your trade mark should be registered in, we will then submit your application to IP Australia.

Application Process: there are essentially two types of trade mark applications that can be lodged:

1. the Standard Application; and
2. the TM Headstart Application (an optional pre-application service).

The TM Headstart Application is an optional pre-payment service that will provide you an initial assessment to help you determine if your trade mark is likely to be registered. It is not a guarantee that your trade mark will be registered, but rather a good indication.

3. Examination: An examiner will formally assess your trade mark application against the requirements specified in the Trade Marks Act 1995. This could take anywhere between three to four months.
4. 2-month opposition period: If your trade mark is accepted your trade mark will be advertised as ‘accepted’ on the IP Australia website. There is then a 2-month period for others to oppose the registration of your trade mark.
5. Registration: After two months, if there are no oppositions your trade mark will be registered!

Well, that depends on which country you intend to apply in.

Currently, in Australia, a successful registration usually takes around seven and a half months, from start to finish, but this process can take longer if there are objections along the way.